- Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Institution deniedPTAB · Dec 3, 2025 · PGR2025-00056 · APJ Steven M Amundson · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, and for the reasons explained below, we determine that Petitioner has failed to demonstrate that it is “more likely than not” that at least one of the claims challenged in the Petition is unpatentable. Hence, we deny the Petition and do not institute a post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 10 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 39. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 22. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’149 patent as well as the asserted references. See, e.g., Ex. 1005, 1:35–6:56, 42:44–46:28, code (57); infra §§ III.E.1–III.E.2, III.G.1–III.G.2, III.H.1.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post-grant review. As Petitioner recognizes, the ’149 patent defines many of the claim terms Petitioner discusses in the “Claim Interpretation” section of the Petition. See Pet. 14–16. For instance, the patent defines “antenna rectangle” as “the orthogonal projection of the antenna box along the normal to the face with largest area of the antenna box.” Ex. 1005, 14:21–24. Further, the patent defines “complexity factor F21” and “complexity factor F32” consistent with the independent claims. See id. at 17:16–21, 17:49–61, 18:8–18, 19:12–25, 20:5–17, 42:62–43:25, 44:5–30, 45:8–46:3. E. Alleged Obviousness over Dou and Ciais-Multiband: Claims 7–9, 11–14, 16, 17, 19, and 20 Petitioner contends that claims 7–9, 11–14, 16, 17, 19, and 20 are” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain why an ordinarily skilled artisan who used Ciais-Quadband’s antenna for Dou’s two antennas 206 and 208 would have departed from the commonly accepted rule of thumb and Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency to the extent needed to implement the proposed combination, i.e., with only about 55% of the preferred spacing between antennas. See Pet. 60–69; Ex. 1007 ¶¶ 172–187. Hence, based on the current record, Petitioner does not establish sufficiently for purposes of institution that an ordinarily skilled artisan would have been motivated to combine Ciais-Quadband’s teachings with Dou’s teachings in the way Petitioner proposes. Further, the addition of two Nakano InvFL antennas extending from the ground plane both above and below the PCB does not remedy the insufficient spacing between “the swapped-in Ciais-Quadband antennas.” Ex. 2010 ¶ 67.” slip op. at 69
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,095,149 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - Tesla, Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 11, 2025 · IPR2025-00218 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the Kim and Vayanos combination did not show that each individual bit indicates a separate time interval, as required by claims 1–12.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limitation 1.2 because it is more consistent with the claim language and the specification of the ’416 patent. The language “each of the plurality of bits” clearly individualizes the “plurality of bits” and the language “indicates a respective time interval that physical shared channel resources are utilized to signal channels” clearly ascribes to each individual bit the function of identifying a time interval that is separate from the time interval(s) that the other individual bit(s) identify. Petitioner’s claim constriction argument largely ignores the words used in limitation 1.2. Petitioner fails to provide anything to explain how or why the plain meaning of “each” and “respective” in the context of limitation 1.2 could be understood by a skilled artisan to connote something other than the plurality of bits individually identifying a separate and distinct time interval (i.e., a “one-to-one correspondence”). Petitioner similarly does not identify anything from the specification of the ’416 patent that would support deviating from the plain meaning of limitation 1.2. And Petitioner’s reliance on 3M Innovative Properties appears to miss the mark. Pet. Reply 7. In that case, the Federal Circuit held that, when a claim term has an “ascertainable definition in the body of the claim,” their “cases do not support prescribing a more particularized meaning unless a narrower construction is required by the specification or prosecution history.” 3M Innovative Properties Co., 725 F.3d at 1329. Here, however, Patent Owner is not attempting to import a more particularized meaning into limitation 1.2, but to demonstrate that the ’416 specification is consistent with the ascertainable definition of “each” and “respective” within the context of limitation 1.2. In particular, Patent Owner highlights that the ’416 specification describes the resource allocation technique as using an indicator bit, within a plurality of indicator bits, that has a one-to-one correspondence to a specific time window established for a Forward Access Channel (FACH). See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9; PO Resp. 11–14, 19–20; PO Sur-reply 2–3; Ex. 2001 ¶¶ 36–40, 49. And we agree that the ’416 specification informs, and is consistent with, the plain reading of limitation 1.2. See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9. Therefore, we determine that the plain and ordinary meaning of limitation 1.2 requires all the plurality of bits to individually identify a separate and distinct time interval that physical shared channel resources are utilized to signal channels.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PICH, which is communicated to Kim’s receiver, has a plurality of bits, the evidence fails to demonstrate sufficiently that each of those bits indicates a respective time interval that physical shared channel resources are utilized to signal channels, as limitation 1.2 recites. As Patent Owner correctly argues, the Vayanos paging indicators use multiple bits to indicate information about a single time interval in a frame, rather having several bits that individually identify a separate and distinct time interval. PO Resp. 39–41 (citing Ex. 2001 ¶¶ 67, 74–75). Vayanos teaches that “[t]he number of paging indicators (Np) in each PICH frame is configurable by the system and can take on a value of 18, 36, 72 or 144,” and that “[e]ach paging indicator is sent in 288/Np consecutive bits in the PICH frame, where 288/Np can take on a value of 16, 8, 4 or 2.” Ex. 1006, 3:26–34. As a result, if there are 18 (Np = 18) paging indicators, 288/NP = 288/18 = 16 (meaning that each paging indicator is 16 bits long), if there are 36 (Np = 36) paging indicators, 288/Np = 288/36 = 8 (meaning that each paging indicator is 8 bits long), if there are 72 (Np=72) paging indicators, 288/Np = 288/72= 4 (meaning that each paging indicator is 4 bits long), and if there are 144 (Np=144) paging indicators, 288/Np = 288/144 = 2 (meaning that each paging indicator is 2 bits long). Ex. 2001 ¶ 66. Each paging indicator (singular) taught by Vayanos includes multiple bits––each paging indicator (singular) has either 16, 8, 4 or 2 bits–– and Vayanos does not disclose or suggest a paging indicator that indicates a time interval with only a single bit. Id. And Petitioner does not cite Kim to show the number of bits used to indicate a time interval; only to show that a UE would receive broadcast information with paging information including paging indicators that identify a time interval in which physical shared channel resources are utilized to signal channels. See Pet. 40–49. Even accepting that the Kim/Vayanos combination discloses a UE receiving a paging indicator that is indicative of a time interval in which a Paging Channel PCH may be found or indicative of whether a frame will include a signaling channel (e.g., PCH) at a specific TTI within that frame, the combination does not disclose or suggest using a paging indicator that is a single bit indicating either of those time intervals. On the contrary, as noted above, Vayanos teaches that all paging indicators consist of multiple bits and, thus, the Kim/Vayanos combination discloses a UE that only receives and uses a plurality of bits to indicate a time interval that physical shared channel resources are utilized to signal channels. This is insufficient to show a reasonable likelihood that Petitioner will be able to establish that the Kim/Vayanos combination discloses or suggests receiving a plurality of bits wherein the individual bits each identify a separate and distinct time interval. Therefore, Petitioner has not shown sufficiently that the Kim/Vayanos combination discloses or suggests the subject matter limitation 1.2 recites. For the above reasons, we are not persuaded that Petitioner has shown sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4 IV. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’416 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,136,416 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18
- Parallel petitionsNot reached
“17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00064 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). “[A] timely-filed Sotera stipulation . . . from a petitioner”—“that, if an IPR . . . is instituted, the petitioner will not pursue in district court . . . any ground raised or that could have been reasonably raised in the IPR”—“is highly relevant, but will not be dispositive by itself. Instead, the Board will consider such a stipulation as part of its holistic analysis under Fintiv.” March 2025 Fintiv Guidance 2–3. Here, Petitioner’s invalidity contentions in the district court case cover” slip op. at 14
- Parallel petitionsNot reached
“18 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 22
Discretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 4
Discretionary denialPatents in suitUS 11,721,714
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.